Discussion

1. There are many occasions when inventions are developed jointly by employees of different companies. This can happen, for instance, when a supplier is attempting to provide a product that addresses a problem faced by a customer: the supplier's engineers and the customer's engineers jointly develop a patentable solution. Who owns such inventions? Would your answer be affected by the existence of applicable employment agreements signed by all the inventors agreeing to assign their inventions to their respective employers? What potential difficulties do you see with such circumstances? What advice would you give to each of the companies to avoid such difficulties? Is there anything the companies should do in advance of the collaboration that might help resolve the ownership issues?

2. Suppose a gifted scientific employee of a nanotechnology company conceives of an invention around the time that she decides to seek other employment. Preferring to make a good impression at her new job and having little motivation to help her current employer, she keeps her idea secret, only disclosing it a few weeks after beginning her new job. Who owns this invention? What additional information might you need to decide? Can you think of any provision in her employment contract that the original employer could have included to prevent this type of behavior? Do you see any public-policy objections to such a provision?

3. Sometimes inventions are developed by employees who are neither hired to invent nor have employment agreements that address ownership of the inventions. If such an employee develops an invention during the normal course of employment, that is, on company time and using employee resources, who owns the invention? Under the "shop right" doctrine, ownership is vested in the employee with the employer granted a royalty-free, nontransferable, nonterminable license to use the invention for its own purposes. Is this a fair apportionment of rights? Why or why not? Can you construct any examples where this seems unfair to the employer? What about examples where it seems unfair to the employee?

4. Under a copyright "work for hire," a work created by an employee hired to make the work is owned by the employer and not by the employee. Compare this copyright doctrine with the "shop right" and "hired to invent" patent doctrines. In what ways does this comparison highlight differences in the rules of ownership for copyrights and patents? Can you provide any public-policy rationale that accounts for these differences?

5. There is a provision in the patent act that requires that assignments of interests in patents be recorded in the patent office,57 in much the same way that mortgages and sales of real property are recorded with a county or city clerk. Why do you think such a requirement exists? What risks would there be to potential purchasers of patents without such a requirement?

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